American Petroleum Institute v. ji xiangpeng / jixiangpeng
Claim Number: FA1305001497849
Complainant is American Petroleum Institute (“Complainant”), represented by B. Brett Heavner of Finnegan, Henderson, Farabow, Garrett & Dunner, L.L.P., Washington, D.C., USA. Respondent is ji xiangpeng / jixiangpeng (“Respondent”), China.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <apistandards.org>, registered with Name.com, LLC (R1288-LROR).
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Paul M. DeCicco, as Panelist.
Complainant submitted a Complaint to the National Arbitration Forum electronically on May 2, 2013; the National Arbitration Forum received payment on May 2, 2013.
On May 2, 2013, Name.com, LLC (R1288-LROR) confirmed by e-mail to the National Arbitration Forum that the <apistandards.org> domain name is registered with Name.com, LLC (R1288-LROR) and that Respondent is the current registrant of the name. Name.com, LLC (R1288-LROR) has verified that Respondent is bound by the Name.com, LLC (R1288-LROR) registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On May 3, 2013, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of May 23, 2013 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@apistandards.org. Also on May 3, 2013, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the National Arbitration Forum transmitted to the parties a Notification of Respondent Default.
On June 3, 2013, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the National Arbitration Forum appointed Paul M. DeCicco as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the National Arbitration Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the National Arbitration Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant contends as follows:
Complainant, American Petroleum Institute (“API”) is the nation’s leading trade association for the petroleum and natural gas industry. Complainant’s origin dates back to World War I, when Congress and the domestic oil and natural gas industry assisted in wartime efforts to ensure that petroleum supplies were quickly deployed to United States armed forces. Complainant API was established on March 20, 1919, and for over ninety years Complainant has used the API mark as a trade name to designate its products and services to promote, develop, and improve the petroleum and natural gas industry. Complainant has used, and currently uses its API mark for its association services, including disseminating information about the petroleum industry, appearances before private and governmental bodies, and encouraging foreign and interstate trade in petroleum and natural gas products. Complainant currently has approximately four hundred corporate members, and its API certification mark appears on “countless” products manufactured and sold by many different companies.
Complainant uses a “Standards Program” to develop standards, specifications, and recommended practices to assist businesses to use safe, interchangeable parts, to produce quality products, and to adopt safe operations practices in the petroleum and natural gas industry. Complainant prints a booklet of these standards, which prominently bears the API mark.
Complainant is the owner of trademark registrations with the United States Patent and Trademark Office (“USPTO”) for the API mark (e.g., Reg. No. 679,642, registered June 2, 1959), and for the AMERICAN PETROLEUM INSTITUTE mark (Reg. No. 2,305,127, registered January 4, 2000).
Respondent’s domain name is confusingly similar to Complainant’s mark because it incorporates Complainant’s mark in its entirety, the descriptive term “standards,” and the generic top-level domain (“gTLD”) “.com.”
Respondent has no rights or legitimate interest in the domain name. Respondent is not and was not commonly known by the domain name. Respondent’s registration and use of the domain name for a commercial website featuring pay-per-click advertisements for directly competing websites and other commercial websites does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use of the domain name.
Respondent registered and is using the domain name in bad faith. Respondent disrupts Complainant’s business by using the domain names to advertise and promote directly competing websites. Respondent uses the domain name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant and its API mark as to the source, sponsorship, affiliation, and/or endorsement of Respondent’s website and the products and services advertised therein.
There is no question that Respondent had knowledge of Complainant’s rights in its API and AMERICAN PETROLEUM INSTITUTE marks when it registered the domain name because Respondent operates another website offering unauthorized and infringing copies of Complainant’s API standards.
B. Respondent
Respondent failed to submit a Response in this proceeding.
Complainant owns USPTO registered trademarks for API and AMERICAN PETROLEUM INSTITUTE.
Respondent is not affiliated with Complainant and had not been authorized to use the API or AMERICAN PETROLEUM INSTITUTE marks in any capacity.
Respondent registered the at-issue domain name after Complainant acquired trademark rights in API and AMERICAN PETROLEUM INSTITUTE.
The <apistandards.org> domain name is used by Respondent to host a commercial website featuring pay-per-click advertisements for websites competing with Complainant and for other commercial websites.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent’s failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see also Talk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
The at-issue domain name is confusingly similar to a trademark in which Complainant has rights.
Complainant’s registration of the API and AMERICAN PETROLEUM INSTITUTE marks with the USPTO sufficiently demonstrates Complainant’s rights in a mark under Policy ¶ 4(a)(i). Complainant need not register its marks where Respondent operates to demonstrate such rights. See Expedia, Inc. v. Tan, FA 991075 (Nat. Arb. Forum June 29, 2007) (“As the [Complainant’s] mark is registered with the USPTO, Complainant has met the requirements of Policy ¶ 4(a)(i)”); see also Koninklijke KPN N.V. v. Telepathy Inc., D2001-0217 (WIPO May 7, 2001) (finding that the Policy does not require that the mark be registered in the country in which the respondent operates and it is sufficient that the complainant can demonstrate a mark in some jurisdiction).
The <apistandards.org> domain name incorporates Complainant’s API mark in its entirety, suffixes the mark with the generic word “standards,” and appends the resulting string with the top level domain name “.org.” Nevertheless, the differences between the at-issue domain name and Complainant’s mark do not distinguish the two for the purposes of the Policy. Therefore, the Panel finds that Respondent’s <apistandards.org> domain name is confusingly similar to the API mark under Policy ¶4(a)(i). See Am. Express Co. v. MustNeed.com, FA 257901 (Nat. Arb. Forum June 7, 2004) (finding the respondent’s <amextravel.com> domain name confusingly similar to Complainant’s AMEX mark because the “mere addition of a generic or descriptive word to a registered mark does not negate” a finding of confusing similarity under Policy ¶ 4(a)(i)); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (finding that the mere addition of the generic top-level domain “.com” is insufficient to differentiate a disputed domain name from a mark).
Respondent lacks both rights and legitimate interests in respect of the at-issue domain name. Respondent is not authorized to use Complainant’s trademark in any capacity and, as discussed below, there are no Policy ¶4(c) circumstances from which the Panel might find that Respondent has rights or interests in respect of the domain name.
Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests. See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum Aug. 18, 2006). Since Respondent failed to respond and since as discussed below there is no evidence supporting a finding pursuant to Policy 4(c) that Respondent has rights or interests in the at-issue domain name, Complainant’s prima facie showing acts conclusively.
WHOIS information identifies “ji xiangpeng / jixiangpeng” as the at-issue domain name’s registrant. Moreover, the record before the Panel contains no evidence that suggests Respondent is otherwise commonly known by the domain name. The Panel thus concludes that Respondent is not commonly known by the at-issue domain name for the purposes of Policy ¶ 4(c)(ii). See Coppertown Drive-Thru Sys., LLC v. Snowden, FA 715089 (Nat. Arb. Forum July 17, 2006) (concluding that the respondent was not commonly known by the <coppertown.com> domain name where there was no evidence in the record, including the WHOIS information, suggesting that the respondent was commonly known by the disputed domain name); see also Reese v. Morgan, FA 917029 (Nat. Arb. Forum Apr. 5, 2007) (concluding that the respondent was not commonly known by the <lilpunk.com> domain name as there was no evidence in the record showing that the respondent was commonly known by that domain name, including the WHOIS information as well as the complainant’s assertion that it did not authorize or license the respondent’s use of its mark in a domain name).
Respondent’s at-issue domain name addresses a website hosting competing hyperlinks titled “2011 API CODES PDF,” “API Tank Design Software,” “Underwater Inspection,” and others. Respondent uses the confusingly similar domain name to earn “click-through” fees from pay-per-click websites and similar websites. Using the domain name in this manner is neither a bona fide offering of goods or services under Policy ¶ 4(c)(i), nor a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See United Servs. Auto. Ass’n v. Savchenko, FA 1105728 (Nat. Arb. Forum Dec. 12, 2007) (“The disputed domain name, <usaa-insurance.net>, currently resolves to a website displaying Complainant’s marks and contains links to Complainant’s competitors.
Given the forgoing, Complainant satisfies its initial burden and conclusively demonstrates Respondent’s lack of rights and lack of interests in respect of the at-issue domain name pursuant to Policy ¶4(a)(ii).
The at‑issue domain name was registered and is being used in bad faith. As discussed below, Policy ¶ 4(b) circumstance are present as well as other circumstances which compel the Panel to conclude that Respondent acted in bad faith pursuant to paragraph 4(a)(iii) of the Policy.
Respondent disrupts Complainant’s business by using the domain names to advertise and promote directly competing websites. Respondent’s at-issue domain name addresses a webpage providing hyperlinks to Complainant’s competitors. The Panel finds that Respondent’s use of the domain name to feature competing hyperlinks disrupts Complainant’s business, showing bad faith use and registration pursuant to Policy ¶ 4(b)(iii). See H-D Michigan Inc. v. Buell, FA 1106640 (Nat. Arb. Forum Jan. 2, 2008) (“The disputed domain names resolve to websites that list links to competitors of Complainant, evidence that Respondent intends to disrupt Complainant’s business, a further indication of bad faith pursuant to Policy ¶ 4(b)(iii).”).
Additionally, Respondent uses the domain name to intentionally attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with Complainant and Complainant’s API mark as to the source, sponsorship, affiliation, and/or endorsement of Respondent’s website and the products and services advertised thereon. Respondent’s domain name addresses a website featuring competing hyperlinks and other pay-per-click hyperlinks. These circumstances show that Respondent’s domain name was used and registered in bad faith pursuant to Policy ¶ 4(b)(iv). See AltaVista Co. v. Krotov, D2000-1091 (WIPO Oct. 25, 2000) (finding bad faith under Policy ¶ 4(b)(iv) where the respondent’s domain name resolved to a website that offered links to third-party websites that offered services similar to the complainant’s services and merely took advantage of Internet user mistakes).
Finally, Respondent knew of Complainant’s API mark before it registered the <apistandards.org> domain name. Respondent’s prior knowledge of Complainant’s rights in the API mark is shown in light of the Panel’s finding that Respondent operates a website addressed by the at-issue domain name that offers unauthorized and infringing copies of Complainant’s API standards. Complainant’s API and AMERICAN PETROLEUM INSTITUTE marks are famous for standards and Respondent selected and registered a domain name including Complainant’s API mark and the term “standards” to directly associate Complainant and its trademark with the confusingly similar domain name. In so doing Respondent must have been aware of Complainant and its trademark. Knowingly registering the trademark of another in a confusingly similar domain name shows Respondent’s bad faith under paragraph 4(a)(iii) of the Policy. See Minicards Vennootschap Onder FIrma Amsterdam v. Moscow Studios, FA 1031703 (Nat. Arb. Forum Sept. 5, 2007) (holding that respondent registered a domain name in bad faith under Policy ¶ 4(a)(iii) after concluding that respondent had "actual knowledge of Complainant's mark when registering the disputed domain name").
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <apistandards.org> domain name be TRANSFERRED from Respondent to Complainant.
Paul M. DeCicco, Panelist
Dated: June 6, 2013
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